Monday, November 26, 2012

On November 19, Life Technologies Corporation and the
California Institute of Technology sued Promega Corporation in the Central
District of California for allegedly infringing US Patent Re-Issue No. 43,096,
entitled "Tagged Extendable Primers and Extension Products."RE43,096 issued on January 10, 2012, as a
reissue of US patent number 6,200,748, which issued on March 13, 2001 and is
based on an application filed June 7, 1995 (and hence eligible for a term of 17
years from the date of issuance). The application claims priority back to an
application originally filed January 16, 1984, which has been the basis for
multiple patents, including US patent number 5,821,058, which was recently the
subject of an interference between Enzo Life Sciences and Life Technologies (the
Board of Patent Appeals and Interferences decided the interference in favor of
Life Technologies in 2010).

The patent came out the Caltech laboratory of Leroy Hood,
and includes as inventors notable figures in the development of
fluorescence-based automated DNA sequencing such as Prof. Hood and Michael
Hunkapiller, the former president of Applied Biosystems who was recently named
CEO of next-generation DNA sequencing company Pacific Biosciences. The reissue patent
claims methods and reagents useful in fluorescence-based nucleic acid analysis.
The complaint alleges that Promega infringes by offering various products for
genetic assays and analysis, including those sold under the brands "PowerPlex,”
“StemElite” and “CellID.”

According to the complaint, the predecessor of RE43,096, the
‘748 patent, it was the subject of prior litigation between the companies that
commenced in 2001 and was ended by a settlement between the parties.According to Life Technologies, as part of
the settlement Prometa agreed to pay royalties on the sale of certain products
after the reissuance of the ‘748 patent.Life Technologies complains that Promega has refused to pay these
royalties.

About Me

I am a law professor at the University of Missouri-Kansas City School of Law. My primary research interests lie at the intersection of biotechnology and intellectual property. This blog provides analysis and commentary on recent developments relevant to this area of the law.